European Union (EUTM) Trade Marks

The team of qualified European Trademark Attorneys at Albright IP are highly experienced at preparing, filing and prosecuting European Union Trade Mark (EUTM) applications. These were formerly known as Community Trade Marks (CTMs). In addition, our team also specialise in opposition, revocation and invalidation proceedings before the European Union Intellectual Property Office (EUIPO) (formerly OHIM).

For a brief introduction to trade marking in Europe, please see our video below. If you are looking to register your trade mark, please call us for a free initial discussion. We also provide free initial searches of the European Union Trade Mark Register for identical trade marks and then advise how to secure comprehensive and cost effective protection for your brand.

European Union Trade Mark Application Procedure

What is a European Union Trade Mark?

A European Union Trade Mark (EUTM) is a cost-effective tool to secure pan-European protection across all 28 European Union Member States in a single registration. Prior to March 2016, these were known as Community Trade Marks (CTMs).

Which countries does a European Union Trade Mark Registration cover?

Austria

Benelux*

Bulgaria

Cyprus

Croatia

Czech Republic

Denmark

Estonia

Finland

France

Germany

Greece

Hungary

Ireland

Italy

Latvia

Lithuania

Malta

Poland

Portugal

Romania

Slovak Republic

Slovenia

Spain

Sweden

United Kingdom

*Note that the Benelux countries are Belgium, the Netherlands and Luxembourg.

What happens when I’m ready to file an application?

We file virtually all EUTM applications via the EUIPO’s e-filing system. This is a fast, efficient system and is less expensive than using the traditional paper filing system.In a straightforward case, the European trade mark application procedure takes 7-9 months.

Please explore the following sections for further details of the European trade mark application procedure.

Pre-application searching

Prior to using or registering a new European Union trade mark, searches should be carried out to check that your trade mark is free for use and registration. We will conduct a free trade mark search for IDENTICAL trade marks on the European Union Trade Mark (EUTM) Register. Please contact us with your trade mark and a list of goods and/or services of interest and we will do this free Trade Mark search for you.

If this is clear, we advise how best to obtain trade mark registration, where you need it. For example, in the UK via a UK Trade Mark, or further afield using national Trade Mark Applications or the International Trade Mark system.

If more detailed full clearance searches for confusingly similar trade marks are required, we offer a range of search packages and can advise upon the most appropriate package for you, along with costs.

In addition to registered trade mark searches, Albright IP encourages you to undertake your own investigation into the use of “unregistered” trade marks, for example, on the Internet, Yellow Pages, at Companies House and on Social Media sites such as Facebook® and Twitter®.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Filing your application

In order to file your European Union Trade Mark application, we require: -

A copy of your trade mark (JPEG images are preferable, if you are protecting a logo);

Applicant name and address (this may be a natural person/persons or a legal entity, such as a Limited Liability Partnership (LLP) or a company); and

a list of the goods and/or services in relation to which the trade mark is used or intended to be used.

If the EUTM application claims priority from a corresponding foreign trade mark application, please also provide the filing date, application number and country of first filing.

Once filed, an official filing receipt is issued by the European Union Intellectual Property Office (EUIPO) immediately. The filing receipt confirms the filing date, the trade mark and the goods and/or services applied for and allocates an application number.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

EUTM Register search

As part of the EUTM trade mark application procedure, the EUIPO conducts a search of the EUTM Register for earlier identical or similar trade marks. The results of this search are sent to the EUTM applicant for information and the EUIPO notifies the earlier trade mark proprietors of the later application. The holders of any earlier rights will have the opportunity to object to the registration of a later trade mark during the publication period.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Examination

A EUTM application undergoes a two stage examination:

Formalities/classification; and

Absolute grounds (i.e. an assessment of whether the trade mark applied for is descriptive, non-distinctive or customary in the relevant trade). It should be considered that the EU has 23 official languages and as such, any word elements will be considered in all languages. Therefore, if a word is descriptive in any of the official languages, it may be refused.

If any objections is raised during examination, Albright IP can advise upon the most appropriate course of action.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Publication and Opposition

Once the examination stage has been completed, the EUTM application will be published in the online Official Journal. This begins a three month period during which third parties have an opportunity to file opposition based upon prior registered or unregistered rights, for example.

Opposition against a EUTM application may only be made of the basis of earlier rights: -

the trade mark applied for is identical with an earlier trade mark and for identical goods or services as the earlier mark;

the trade mark applied for is identical with an earlier trade mark and for similar goods or services as the earlier mark;

the trade mark applied for is similar to an eariler trade mark and for identical or similar goods or services as the earlier mark;

the trade mark applied for is identical or similar to an earlier trade mark which has a reputation;

In general, the opposition rate against EUTM applications is higher than that of UK trade mark applications. This is largely because the holder of an earlier EUTM registration or earlier national trade mark registration from any of the EU Member States may oppose a later EUTM.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Registration

After publication, if the EUTM application is accepted for registration, the Certificate of Registration will be issued by the EUIPO. This document confirms the registration details and includes a representation of the trade mark, the goods and services covered and also, the filing and registration dates. EUTM Registration Certificates are now issued electronically and can be downloaded from the EUIPO website.

Once the European Union Trade Mark application has registered you may use the ® symbol to indicate that your trade mark is now registered. This cannot be used until the trade mark is registered.

You may also wish to state "[YOUR TRADE MARK] is a Registered Community Trade Mark of [PROPRIETOR]". This alerts others to your rights and can act as a deterrent to infringement.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Renewal

A European Union Trade Mark registration can last forever, provided that it is renewed every 10 years and that it is used in the EU in relation to the goods or services for which it is registered. A EUTM registration can be subject to action for revocation for non-use, five years after registration.

Albright IP will ensure that all renewal deadlines are diaried and will remind you when renewal is due, ensuring that your rights can be maintained.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Through our qualified and experienced European Trade Mark attorneys, Albright IP can fully and proactively protect your brand with registered trade mark rights, which can also be used to obtain lucrative licence and assignment deals.

What do I need to do to maintain my trade mark?

In addition to renewal of your trade mark registration, there are other steps that you can take to ensure your trade mark remains in force and well protected.

Keep us informed of any changes to your contact details. If your contact details are incorrect then we cannot inform you of upcoming renewal deadlines or other issues surrounding your trade mark. For example, the EUIPO will notify us, as your representative, of any later filed trade mark applications that they consider to conflict with your rights.

A European Union trade mark registration may become vulnerable to revocation for non-use, if it is not used in the EU for a period of 5 or more years. Revocation is not automatic but an action can be brought by a third party, if they wish to remove your trade mark from the register and register their own trade mark. Faced with a revocation action, you would have to provide evidence of use of your trade mark in the relevant five year period. Compiling this evidence can be expensive and time-consuming. In order to reduce this cost, we recommend that you keep records to illustrate use of your trade mark. Include examples of advertising, features in magazines, use on the Internet, invoices showing the trade mark in use, business cards and brochures.

It is important to use your trade mark correctly and in the format that it is registered. Trade marks should be used in the singular and as an adjective; never a noun or a verb. It is also wise to state that the trade mark is registered in Europe.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

What our customers say

Katie Oliver gave me very valuable advice just when I needed it. Her reply was fast, short and to the point. I followed her advice, which led to the successful registration of the trademark of my dreams. Thanks Katie!

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Helpful Tips

You should register your Trademarks in the form(s) that you use them. If you use a word and a Logo, the strongest protection is usually gained by registering both.